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Lisbon Court of Appeal: BELCANTO is a “trade mark with reputation”

Summary

On 23 May 2019, the Lisbon Court of Appeal (LCA) delivered a judgment acknowledging the status of “trade mark with reputation” regarding the Portuguese trade mark No. 455669 BELCANTO, used in the famous “BELCANTO” restaurant, in Lisbon, of Chef José Avillez.

Conclusions

The judgment of the LCA is particularly relevant, because it clearly concludes on the similarity between goods and services within the legal framework of trade mark imitation.

This judgment also indicates that the Portuguese case law is departing from the merely quantitative parameters to assess the reputation of trade marks, focusing the assessment on the relevance and on the national and international recognition of the restaurant services associated with the BELCANTO trade mark.

Background

On March 14, 2016, the trade mark application No. 561896 BELCANTO was filed to cover wines, in class 33 of the Nice Classification, and it was granted by decision of the Portuguese PTO.

The company Gonzalez, Garrido & Antela, Lda., holder of the earlier Portuguese trade mark registration No. 455669 BELCANTO, covering serviços de bar, cafés-restaurantes, in class 43, filed an appeal against the decision of the PTO before the Intellectual Property Court (IP Court).

In said appeal, Gonzalez, Garrido & Antela, Lda. claimed that the Portuguese trade mark No. 561896 BELCANTO imitates its prior trade mark No. 455669 BELCANTO, given the identity between the signs and the similarity between the services and goods under analysis. Gonzalez Garrido & Antela, Lda. also sought to demonstrate that the prior trade mark BELCANTO has acquired a well-known character and reputation in Portugal and that the use of the trade mark No. 561896 BELCANTO for wines seeks to take unlawful advantage of the distinctive character or reputation of the earlier trade mark, thereby harming them.

However, the IP Court delivered a judgment deciding not to revoke PTO’s decision, by considering that there is no similarity between the goods and services covered by those trade marks.

Gonzalez, Garrido & Antela, Lda. appealed that decision to the Lisbon Court of Appeal.

The decision of the Lisbon Court of Appeal of 23 May 2019

On 23 May 2019, the Lisbon Court of Appeal delivered a judgment:

- Concluding that the Portuguese trade mark No. 561896 BELCANTO imitates the Portuguese trade mark No. 455669 BELCANTO, clarifying in this regard that wines are goods similar to the restaurant and bar services covered by the Portuguese trade mark No. 455669 BELCANTO, because they are complementary to each other and because they share the same distribution channels and are addressed to the same public consumer;

- Qualifying the Portuguese trade mark No. 455669 BELCANTO of Gonzalez, Garrido & Antela, Lda. as a “trade mark with reputation”, considering the relevance of the trade mark both at national and international level, concluding that the granting of Portuguese trade mark No. 561896 BELCANTO would allow taking unlawful advantage of the distinctive character and reputation of the prestigious BELCANTO trade mark;

- Qualifying the registration of Portuguese trade mark No. 561896 BELCANTO as an act of unfair competition, stating that such application is clearly an attempt to take advantage of the goodwill associated with the BELCANTO prior trade mark, and to lead consumers in Portugal into believing that the wines covered by that trade mark are associated with the BELCANTO restaurant, or with Chef José Avillez.


19-08-2019  
 

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